Ex Parte Schachner et al

Patent Trial and Appeal Board

Mar 15, 2018

13327303 (P.T.A.B. Mar. 15, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/327,303 12/15/2011 Thomas Schachner 2058.642US1 5752
50400 7590 03/19/2018
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
03/19/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS SCHACHNER, RUDOLF GENTNER,
RALF KUEHNER, MICHAEL HOHENDORF, and
DIRK HENRICH
Appeal 2016-001963
Application 13/327,3031
Technology Center 3600
Before HUBERT C. LORIN, BART A. GERSTENBLITH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Schachner et al. (Appellants) seek our review under 35
U.S.C. § 134(a) of the Final Rejection of claims 1—13 and 15—21. We have
jurisdiction under 35 U.S.C. § 6(b).
1 The Appellants identify SAP SE as the real party in interest. Br. 2.
Appeal 2016-001963
Application 13/327,303
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method comprising:
maintaining, at a host financial system, an accounting
system with a generic cost object;
providing instructions, by the host financial system to a
system of an entity separate from the host financial system, that
cause presentation of a user interface to the entity, the user
interface to receive attributes to create a configured cost object
that represents a specialized business item;
receiving, by the host financial system from the system
of the entity separate from the host financial system, data
representing the configured cost object created by the entity;
creating, by a hardware processor, a mirror cost object
using the received data representing the configured cost object
created by the entity, the mirror cost object being a mirror
instance of the configured cost object;
storing the mirror cost object in a storage device of the
host financial system;
causing the accounting system to perform accounting
operations using the mirror cost object and a corresponding
business configuration set, the accounting operations
comprising
accessing a configuration database to obtain the
corresponding business configuration set that corresponds to the
mirror cost object, and
replacing the generic cost object of the accounting
system at the host financial system with the mirror cost object;
and
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providing output based on performing the accounting
operations using the mirror cost object and the corresponding
business configuration set.
THE REJECTION
The following rejection is before us for review:
1. Claims 1—13 and 15—21 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 1—13 and 15—21 under 35
U.S.C. § 101 as being directed to non-statutory subject matter?
ANALYSIS
The Appellants argued these claims as a group. See Br. 8—27. We
select claim 1 as the representative claim for this group, and the remaining
claims 2—13 and 15—21 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv). Alice Corp. Proprietary Ltd. v. CLS Bank
International, 134 S. Ct. 2347 (2014), identifies a two-step framework for
determining whether claimed subject matter is judicially-excepted from
patent-eligibility under 35 U.S.C. § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that “[cjlaims 1—13 and 15—
21 are directed to a series of steps configuring cost objects in a financial
system, which is a fundamental economic practice and thus an abstract
idea.” FinalRej.2.
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Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72—73 (2012)).
In that regard, the Examiner determined that “[t]he claim(s) do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because the addition of the generically
recited computer elements do not add a meaningful limitation to the abstract
idea because they would be routine in any computer implementation.” Final
Rej. 2.
The Examiner adds:
To be clear, the claims recite transferring “objects”
between entities and replacing “objects” at a host system with a
different, created “object.” Applicant's Specification states that
objects and entities can be software modules. For patent-
eligibility purposes, everything recited can be performed
through a generic computer(s), where the functioning of the
underlying computer(s) would essentially stay the same except
for the implementation of standard cost objects, that may be
changed through the implementation of the abstract idea. In
other words, under the claim’s broadest reasonable
interpretation, the claims recite software instructions that are
implemented on generic computer(s).
Final Rej. 2—3.
The Appellants challenge the rejection starting at page 8 of the Appeal
Brief. Headings are used to organize the Appellants’ arguments. We will do
the same as we evaluate the contentions in each corresponding section.
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A) The Applicable Law under 35 U.S. C. §101 (Br. 8)
We have no issue with what is generally stated in this section.
B) Discussion of the rejection of claims 1—13 and 15—21 under 35 U.S.C.
§ 101 as allegedly being directed to a judicial exception without
significantly more (Br. 9)
This section briefly summarizes the Examiner’s position and the
grounds on which the Appellants challenge said position, that is,
1) the Examiner has not established a prima facie case that
the claims are not directed to patent-eligible subject matter;
2) the claims at issue are not directed to an abstract idea
(Mayo step I); and 3) even if the claims are directed to an
abstract idea, they are not directed to an unpatentable idea
(Mayo step II).
Br. 9.
We have no issue with what is generally stated in this section.
I. The Examiner has not established a prima facie case that the claims are
not directed to patent-eligible subject matter (Br. 9—10)
In this section, the Examiner’s positon that “[cjlaims 1-13 and 15-21
are directed to a series of steps configuring cost objects in a financial
system, which is a fundamental economic practice and thus an abstract idea”
(Final Rej. 2) is criticized because allegedly it is a “mere conclusory
statement,” “no evidentiary support in making this allegation” has been
provided, it “fails to establish a prima facie case that the claims are directed
to an abstract idea,” “specific claim limitations and the claims as a whole
[were ignored] and [instead] merely reduced the subject matter of the
claims to an Examiner-created summarization of the claims,” “there is no
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evidence on the record that the invention, as defined by the particular claim
limitations, is simply some abstract idea,” and there is “no evidence or even
argument as to why ‘a series of steps configuring cost objects in a financial
system’ is a fundamental economic practice long prevalent in our system of
commerce.” (Br. 9).
The method of claim 1 comprises seven steps whereby a host financial
system:
1. maintains an accounting system with A;
2. provides instructions to a system of an entity separate from the
host financial system to cause presentation of a user interface to the entity,
the user interface to receive attributes to create B;
3. receives data representing information B from the entity;
4. creates C using the data representing B via a hardware
processor;
5. stores C;
6. causes the accounting system to perform accounting operations
using C and D by (a) accessing a database to obtain D and (b) replacing A
with C;
7. provides output based on performing the accounting operations
using C and D; where A, B, C, and D are types of information; that is, A = a
generic cost object; B = a configured cost object that represents a specialized
business item; C = a mirror cost object; and, D = a business configuration
corresponding to C.
In other words, claim 1 defines an information-processing method
whereby information a financial system uses to perform accounting
operations is changed based on an entity’s input. The claimed method is
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directed to information gathering, replacing and presenting, albeit
specifically applied to financial accounting. This characterization of what
the claim is directed to is consistent with what is discussed in the
Specification. The Specification states inter alia that “[conventionally
when a user wants to incorporate financial information that is specialized to
the needs of the user into an accounting system, the user will need to
purchase a customized or specialized accounting system that addresses the
needs of the user.” Para. 2. The invention overcomes the need to purchase a
customized system by allowing a user to change the information the system
already uses. This characterization is not far off from what the Examiner
determined it to be. The concept of “a series of steps configuring cost
objects in a financial system” that the Examiner characterized the concept to
which the claim is directed to is simply at lower level of abstraction. Cf.
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer.”).
Accordingly, we disagree that the Examiner has failed to properly
determine what the claim is directed to.
As far as evidentiary support for the determination that the concept to
which the claim is directed is an abstract idea, suffice it say that it is not
necessary to resort to additional facts and evidence in making the Alice step
one determination when the claims can adequately be compared to claims
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declared abstract in past cases. See Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (“Instead of a definition, then, the
decisional mechanism courts now apply is to examine earlier cases in which
a similar or parallel descriptive nature can be seen—what prior cases were
about, and which way they were decided.”). Here, as we stated, claim 1
calls for gathering four types of information, one is used to replace another,
and two are used for performing an accounting operation on which to base
an output. Thus, claim 1 is directed to gathering and replacing information
and using information for an output. This is similar to the claimed methods
for achieving real-time performance monitoring of an electric power grid
that were held directed to the abstract idea in Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). When “the focus of the
asserted claims” is “on collecting information, analyzing it, and displaying
certain results of the collection and analysis,” the claims are directed to an
abstract idea. Id. at 1353. “[Collecting information, including when limited
to particular content (which does not change its character as information),
[is] within the realm of abstract ideas.” Id.
Accordingly, notwithstanding the Appellants have not made the case
that a factual dispute has arisen necessitating additional evidentiary support,
it is sufficient to show the claimed subject matter is directed to an abstract
idea by comparing the claims to those previously declared abstract as we
have done here.
The remaining arguments in this section are unpersuasive as to error
in the rejection.
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A. The Examiner is required under the Administrative Procedures Act to
provide substantial evidence to support a § 101 rejection. (Br. 10—11)
B. There is no other area where rejections can be sustained on conclusory
statements. (Br. 11—12)
C. The Supreme Court and Federal Circuit cited authoritative
documentation to support their assertions about abstract ideas. (Br. 12—13)
D. The PTAB also indicates a need to cite authoritative documentation
rather than rely on conclusory statements (Br. 13—14)
The Appellants next argue that “the Examiner has failed to comply
with the requirements of the Administrative Procedures Act, namely, the
requirement to provide ‘substantial evidence’ in rejecting claims under 35
U.S.C. § 101” (Br. 10); “there is no instance where the courts have sustained
the ability of the Examiner to provide a conclusory statement without
support” (Br. 11); “unless the Examiner does provide authoritative
documentation just as the Supreme Court did in Alice, the Examiner’s [sic]
has not performed a ‘proper 101 analysis’” (Br. 12); and, “the PTAB
indicates a need to rely on actual evidence rather than conclusory statements
when supporting an assertion that something is an abstract idea” (Br. 13).
These arguments repeat the point that the Appellants made earlier —
that they would like to see the Examiner provide evidentiary support for the
determination that the claims are directed to an abstract idea. As we stated,
notwithstanding the Appellants have not made the case that a factual dispute
has arisen necessitating additional evidentiary support, it is sufficient to
show the claimed subject matter is directed to an abstract idea by comparing
the claims to those previously declared abstract as we have done above.
Whether or not § 101 should be applied in the same way other areas of
patent law are applied and whether the APA, Supreme Court, Federal
Circuit, and PTAB mean to require evidentiary support to reject claims
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under § 101 are not questions we need to explore. Here, the Appellants have
not made the case that a factual dispute has arisen that additional evidence
can help resolve. Up to this point in the Brief, the Appellants have not
shown that claim 1 is not directed to information processing (i.e., gathering,
replacing, outputting) as is clear from a plain reading of the claim.
[T]he “directed to” inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether “their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375
(Fed. Cir. 2016) (inquiring into “the focus of the claimed advance
over the prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.’” Affinity Labs of Texas, LLC
v. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) {quotingElec.
Power Grp., LLC, 830 F.3d at 1353); see also Enfish, LLC, 822 F.3d at 1335
(quoted in Apple, Inc. v. Ameranth, Inc., 7842 F.3d at 1241). In that regard,
we explained above that the Specification shows that the invention
overcomes the need to purchase a customized system by allowing a user to
change the information the system already uses. In accord with what is
claimed, the Specification supports the view that “the heart of the claimed
invention lies,” Intellectual Ventures I LLC v. Erie Indemnity Company, 850
F.3d 1315, 1328 (Fed. Cir. 2017), in gathering, replacing, and outputting
information, albeit applied in an accounting context.
E. The Examiner has not established a prima facie case against the
dependent claims (Br. 14—15)
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This section argues that the Examiner has not treated the dependent
claims. Yet, except to say that “each dependent claim includes elements
relevant to the subject matter eligibility of these claims,” nothing more is
said about why the limitations in said claims render said claims patent-
eligible. From our review of the dependent claims, they appear to describe
various information gathering/processing schemes, which do little to
patentably transform the abstract idea. For example, claim 5 calls for
“receiving a notification” and claim 6 that “the notification comprises data
indicating cost or revenue associated with the mirror cost object.” These
claims add a step of receiving certain information that do little to transform
the information-gathering abstract idea that claim 1 is directed to. Cf. Apple,
Inc. v. Ameranth, Inc., 842 F.3d at 1244 (“These claims depend from
independent claims which were found to be directed to unpatentable subject
matter, as discussed above. Merely appending this preexisting practice to
those independent claims does not make them patentable. It is an
insignificant post-solution activity.”). Also, where all claims are directed to
the same abstract idea, “addressing each claim of the asserted patents [is]
unnecessary.” Content Extraction & Transmission LLCv. Wells Fargo
Bank, Natl Assn, 776 F.3d 1343, 1348 (Fed. Cir. 2014).
II. The claims are not directed to an abstract idea under the Mayo Test
(Mayo Step I) (Br. 15—16)
In this section, the Appellants quote the two-step Alice framework,
reproduce claim 1 — emphasizing actions such as “receiving” and types of
information such as “data representing the configured cost object the claim”
recited in the claim, and conclude that:
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[t]his claim is not directed to a law of nature, natural
phenomena, or an abstract idea, because,. . ., this claim is not
directed to the subject matter of any of the only types of claims
that the Court has positively identified as being within the
implicit exception to subject matter eligibility, specifically:
(1) an idea or algorithm of itself or a (2) a fundamental
economic practice.
Br. 15-16.
For the reasons already discussed, this section does not present a
persuasive argument that claim 1 is not directed to an abstract idea. Claim 1
is directed to an information-processing scheme that is similar to that which
the Federal Circuit has already deemed to be an abstract idea.
A. The claims at issue are not directed to an idea or algorithm of itself. (Br.
16)
The Appellants argue that “the claims at issue are directed to
something that can be physically perceived or causes a physical change.”
Br. 16. In other words, Appellants contend that because something physical
is involved, that necessarily obviates the abstract nature of what is claimed.
But that is not the law. Whether or not something as claimed is “concrete”
and “physical” is not the test for determining whether claimed subject matter
is judicially-excepted from patent-eligibility. If that were the case, claims to
computers would necessarily be patent eligible. But that is not the case. See
Alice, 134 S. Ct. at 2358—59 (“The fact that a computer “necessarily existfs]
in the physical, rather than purely conceptual realm” is beside the point.
There is no dispute that a computer is a tangible system (in § 101 terms, a
“machine”), or that many computer-implemented claims are formally
addressed to patent-eligible subject matter. But if that were the end of the
§ 101 inquiry, an applicant could claim any principle of the physical or
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social sciences by reciting a computer system configured to implement the
relevant concept.”).
B. The claims at issue are not directed to a fundamental practice long
prevalent in our system of commerce (Br. 17—18)
The Appellants argue that, “[i]n particular, the generic cost objects are
replaced by mirror cost objects to specially configure the host financial
system to the specific needs of the partner system. This is not a fundamental
economic practice like risk management or intermediated settlement.”
Br. 17. Whether or not something is a fundamental economic practice is not
the test for determining whether something is an abstract idea. Nevertheless,
replacing one type of information with another is arguably fundamental in
almost every practice, include economic practices.
If the Appellants are arguing that the claim specifically requires
“generic cost objects” being replaced by “mirror cost objects,” as we have
stated, this is merely replacing one type of information with another, albeit a
certain type of information. It should be noted that “mirror cost objects” can
be in any form including “free text.” See Specification, para. 45.
Accordingly, claim 1 covers replacing text with other text. The fact that said
text is accounting-related is not a persuasive reason to determine that the
claimed subject matter is patent-eligible. This is so because “collecting
information, including when limited to particular content (which does not
change its character as information), [is] within the realm of abstract ideas.”
Elec. Power Grp., LLC, 830 F.3d at 1353. “Limiting the field of use of the
abstract idea to a particular existing technological environment does not
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render any claims less abstract.” Affinity Labs of Tex., LLC, 838 F.3d at
1259 {citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294).
C. When viewed as a whole, the claims at issue do not seek to tie up a
judicial exception such that others cannot practice it. (Br. 18—19)
The argument here, as we understand it, is that the claimed subject
matter is not a product of nature. That may be so, but the question is
whether claim 1 is directed to the abstract idea of information-processing
and, if so, whether claim 1 includes an element or combination of elements
sufficient to ensure that the claimed subject matter amounts to significantly
more than information-processing.
We are satisfied that the record supports the determination that
claim 1 is directed to the abstract idea of information-processing, namely
gathering, replacing, and outputting information. The Appellants’
arguments challenging that determination are unpersuasive.
We now turn to the Appellants’ arguments challenging the
Examiner’s determination under step two of the Alice analysis.
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V. Assuming, arguendo, that the claims at issue are directed to an abstract
idea, the claims at issue are nevertheless directed to patentable subject
matter (Mayo Step II) (Br. 19)
We have no issue with what is said here.
A. An analysis of the relevant factors weighs in favor of the subject matter
eligibility of the claims at issue (Br. 19—20)
This section does not clearly explain what is wrong with the
Examiner’s determination under step two of the Alice analysis. The
Appellants argue that “there is no evidence that the Examiner actually took
into consideration any of the factors specified by the Court in Alice.'1'’ Br. 20.
What those factors are is not explained. Accordingly, the argument is
unpersuasive as to error in the determination.
i. The claims at issue recite a specially-configured computer (Br. 20)
The Appellants argue:
the claims at issue in this case not only recite storing the mirror
cost object in a storage device but also a hardware processor
configured to create the mirror cost object. Further still, the
claims provide an accounting system that is specially
configured by replacing the generic cost object of the
accounting system with the mirror cost object. Given the
disclosure in the specification, it is clear that the claims recite a
specially-configured computer [unlike the generic one in Alice].
Br. 20.
This is an unpersuasive argument. The intrinsic evidence supports the
opposite view — that claim 1 covers using generic computer components.
See Spec., paras. 51—63, especially para. 53 (“general-purpose processor”).
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ii. The steps recited in the claims are specified at a low level of generality.
(Br. 21)
The Appellants argue that “[h]ere, the operations recited in the claims
at issue are at a lower-level of generality than the operations recited in the
claims at issue in Bilski and Alice.'” Br. 21. But a lower level of generality
than the operations recited in the claims at issue in Bilski and Alice does not
make claim 1 any less abstract.
Hi. The claims at issue solve a technological problem in conventional
industry practice. (Br. 21)
The Appellants argue that “independent claim 1 solves a technological
problem that was in conventional industry practice.” Br. 22.
Here, as noted in the as-filed application, under conventional
industry practice, “when a user wants to incorporate financial
information that is specialized to the needs of the user into an
accounting system, the user will need to purchase a customized
or specialized accounting system . . . [or] customize an existing
account system.” As a result, “more than one accounting
system may be needed by an entity in order to manage the
financials of the entity.”
Br. 21—22 (citing para. 2 of the Specification).
The difficulty here is that the resulting scheme still amounts to
gathering, replacing, and outputting information, which is an abstract idea.
While this scheme may overcome the need to purchase a customized or
specialized accounting system, the scheme does not overcome a technical
problem with the computer. Rather it overcomes the hardship that
purchasing another customized or specialized accounting system might
impose on someone. Overcoming that hardship necessarily means that
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“computing resources used by one or more devices within the system [are
reduced]” (Spec., para. 16). But reducing resources per se is not a technical
solution. Replacing information in a computer rather than using a new
computer is not a solution to a technical problem. It is an efficient use of
resources. In effect, the claimed subject matter provides only a result-
oriented solution involving common computer components. Cf. Credit
Acceptance Corp. v. Westlake Servs., LLC, 859 F.3d 1044, 1057 (Fed. Cir.
2017) (“Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process.”); see
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342
(Fed. Cir. 2017) (explaining that “[o]ur law demands more” than claim
language that “provides only a result-oriented solution, with insufficient
detail for how a computer accomplishes it”); Elec. Power Grp., 830 F.3d at
1354 (explaining that claims are directed to an abstract idea where they do
not recite “any particular assertedly inventive technology for performing
[conventional] functions”).
iv. When considered separately, the functions of each step of the claims at
issue are not purely conventional (Br. 22—25)
The Appellants argue that “the functions recited in the claims at issue
are not purely conventional functions.” Br. 23.
The evidence more strongly supports the opposite view. As we
pointed out, the Specification shows that generic computer components can
be used to practice the method as claimed. The claim steps of
“maintaining,” “providing,” “receiving,” “creating,” “storing,” “causing,”
“accessing,” “replacing,” and “providing output,” are operations a generic
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computer commonly performs. Cf. buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (stating “[t]hat a computer receives and sends
the information over a network—with no further specification—is not even
arguably inventive”).
v. When considered as an ordered combination, the elements of the claims
at issue include something more (Br. 25)
The Appellants appear to argue that claim 1 presents an ordered
combination that adds significantly more. We note that much of claim 1 has
been reproduced. Br. 25.
But “[tjaking the claim elements separately, the function performed
by the computer at each step of the process is ‘[pjurely conventional.” Alice,
134 S. Ct. at 2359 (citing Mayo, 132 S. Ct. at 1298). “Considered ‘as an
ordered combination,’ the computer components of petitioner’s method
‘ad[d] nothing . . . that is not already present when the steps are considered
separately.” Alice, 134 S. Ct. at 2359. We reach this view based on reading
the claim in light of the Specification’s disclosure — as we have discussed
above. Given no other countervailing evidence, the argument that claim 1
presents an ordered combination that adds significantly more is unpersuasive
as to error in the determination under step two of the Alice analysis.
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B. Like the claims in DDR Holdings, the claims at issue are rooted in
computer technology in order to overcome a problem specifically arising in
a particular computer realm (Br. 25—26)
This section repeats arguments we have already addressed above. The
reliance on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014), is inapposite. There the court found that
upon the click of an advertisement for a third-party product
displayed on a host's website, the visitor is no longer
transported to the third party's website. Instead, the patent
claims call for an “outsource provider” having a web server
which directs the visitor to an automatically-generated hybrid
web page that combines visual “look and feel” elements from
the host website and product information from the third-party
merchant's website related to the clicked advertisement.
Id. at 1258.
There is nothing similar in claim 1. Claim 1 simply calls for
processing certain information. Unlike claim 1, the claims at issue in DDR
“specify how interactions with the Internet are manipulated to yield a desired
result—a result that overrides the routine and conventional sequence of
events ordinarily triggered by the click of a hyperlink.” Id.
C. Allowable subject matter (Br. 26—27)
Lastly, the Appellants argue that “if the known art does not render
the ordered combination of elements obvious, then those differences that
serve to make the claims non-obvious should also serve to make the claims
“something more” than the mere recitation of an alleged abstract idea
combined with known technology.” Br. 27. There is no prior art rejection
on appeal.
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However, a finding of novelty or nonobviousness does not necessarily
lead to the conclusion that subject matter is patentable eligible.
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass ’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
Indeed, “[t]he ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v.
Diehr, 450 U.S. 175, 188—89 (1981) (emphasis added); see also
Mayo, 132 S. Ct. at 1303—04 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”). Here, the jury’s
general finding that Symantec did not prove by clear and
convincing evidence that three particular prior art references do
not disclose all the limitations of or render obvious the asserted
claims does not resolve the question of whether the claims
embody an inventive concept at the second step of Mayo/Alice.
Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016).
Nor does a finding of obviousness necessarily lead to the conclusion
that subject matter is patentable ineligible. See Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016) (“That each of the
claims’ individual steps (freezing, thawing, and separating) were known
independently in the art does not make the claim unpatentable.”). “[Pjatent-
eligibility does not turn on ease of execution or obviousness of application.
Those are questions that are examined under separate provisions of the
Patent Act.” Id. at 1052 (citing Mayo, 566 U.S. at 90).
Notwithstanding that “‘the § 101 patent-eligibility inquiry and, say,
the § 102 novelty inquiry might sometimes overlaps]’ ... a claim for a new
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Appeal 2016-001963
Application 13/327,303
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (quoting Mayo, 566 U.S. at 90). The question in
step two of the Alice framework is not whether an additional feature is novel
but whether the implementation of the abstract idea involves “more than the
performance of ‘well-understood, routine, [and] conventional activities
previously known to the industry.’” Content Extraction and Transmission,
776 F.3d at 1347-48 (quoting Alice, 134 S. Ct. at 2359). In that regard, for
the reasons discussed, the Appellants have not shown the novel features
transform the abstract idea into patent-eligible subject matter.
We have considered all of the Appellants’ remaining arguments and
have found them unpersuasive. Accordingly, because representative
claim 1, and claims 2—13 and 15—21, which stand or fall with claim 1, are
directed to an abstract idea and do not present an “inventive concept,” we
sustain the Examiner’s determination that they are directed to ineligible
subject matter under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1—13 and 15—21 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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